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Oct. 21 --The Patent and Trademark Office published its final rule
Oct. 21 on changes to the agency's rules of patent practice consistent with
implementation of the Patent Law Treaty. 78 Fed. Reg. 62,368.

The
notable changes are in lessening the requirements for a patent application on
the filing date; elimination of “unavoidable” delay reasons when trying to
revive abandoned applications and make late maintenance fee payments; and a
limited allowance for two-months delay in the time to file an application
seeking priority of an earlier one.

The changes take effect Dec. 18, but
most of the changes--filing requirements excluded--will apply to applications
already on file as of that date.

Background

The Patent Law Treaties Implementation Act of 2012, enacted
in December , amended the Patent Act to implement the Geneva Act of 1999 of the
Hague Agreement Concerning the International Registration of Industrial Designs
(in Title I) and the Patent Law Treaty of 2000 (in Title II). The Senate had
ratified both treaties in 2007.

The Patent Law Treaty limits and
synchronizes patent application filing formalities among signatory countries.
The Geneva Act allows U.S. applicants to apply for design patent protection in
all member countries by filing a single application at the PTO.

The
agency has not yet made a proposal related to Geneva Act changes. The PTO requested comments on April 11 (78 Fed. Reg. 21,788, ,
addressing only Title II, the implementation of the Patent Law Treaty.

The office received comments from nine stakeholders, and the Federal Register
notice provided responses to 21 separate comments.

Effect

“The
PLT
harmonizes and streamlines formal procedures pertaining to the filing and
processing of patent applications,” according to the notice. It does not apply
to design, plant, provisional or reissue patents. The PLT's major changes
are:

• Revision of the PTO's rules of practice affecting filing date
requirements under 37 C.F.R. §1.53. The revised rule allows an applicant to
submit a nonprovisional application without a claim and still be entitled to
that filing date. Additionally, nonprovisional applications can now be filed
“by reference” to prior applications without separate specifications and
drawings, as implemented in Rule 1.57.

If the applicant supplied a
correspondence address, “the applicant will be given a period of time within
which to supply a claim and/or claims or a copy of the specification and
drawings of the previously filed application,” or the period will be three
months for those not supplying an address.

In any case, though,
applicants should be aware that the PTO also chose to limit patent term
adjustment “if an application is not in condition for examination within eight
months of its filing date or date of commencement of national stage in an
international application.” Under 35 U.S.C. §154(b)(1)(A)(i), PTA accrues if
the PTO does not provide a first office action within 14 months, but accrual
will stop after a failure to meet the eight-month completion date, which
includes claims, the specification and drawings as well as other elements
listed in 37 C.F.R. §704(f).

To further make the point, the agency said
in particular that “the use of the reference filing provisions of 35 U.S.C.
111(c) and §1.57(a) should be relatively rare.”

The PLTIA eliminated these provisions to the extent that the tardy
applicant's explanation was on the basis of a showing of “unavoidable'' delay.
However, the impact is unclear, as in answering one of the comments, the PTO
claimed, “the Office considers [the unavoidable delay standard] to be a subset
of 'unintentional' delay.”

The “unintentional” standard was recently at
issue in a case before the U.S. Court of Appeals for the Federal Circuit.
Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co., No. 2012-1492
(Fed. Cir. Sept. 24, 2013) . The court has addressed the issue on fact-specific
bases otherwise, and the confines of the standard are generally left to the
PTO's discretion.

• Opportunity for delayed restoration of priority in a
previously filed foreign application or the right to benefit from a provisional
application, with changes to Rules 1.55 and 1.78, respectively. The subsequent
application must be filed within two months of the prior application's
expiration--at 12 months from filing--but again, only when the delay is
unintentional.

Other

In its final rule, the PTO also made
miscellaneous changes to its rules “pertaining to the supplemental examination,
inventor's oath or declaration, and first inventor to file provisions of the
Leahy-Smith America Invents Act (AIA).”

Finally, the agency addressed
a comment submitted by several stakeholders that, in assessing patent
application restrictions, examiners should change from the current “independent
and distinct” inventions standard of 35 U.S.C. §121 to the “unity of invention”
standard for analyzing applications filed under the Patent Cooperation
Treaty.

The PTO responded that “the Office is in the process of studying
the changes to the patent statute, regulations, examination practices, and
filing fees that would be necessary” to conform with PCT Rule 13 “in a
practical manner.”

To contact the reporter on this story:
Tony Dutra in Washington at adutra@bna.com

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